SSRN Author: Peter S. MenellPeter S. Menell SSRN Contenthttps://www.ssrn.com/author=99590
https://www.ssrn.com/rss/en-usSun, 16 Feb 2020 01:26:09 GMTeditor@ssrn.com (Editor)Sun, 16 Feb 2020 01:26:09 GMTwebmaster@ssrn.com (WebMaster)SSRN RSS Generator 1.0REVISION: <i>Google v. Oracle</i> Amicus Merits Stage Brief: Vindicating IP’s Channeling Principle and Restoring Jurisdictional Balance to Software Copyright ProtectionThe Federal Circuit’s decisions in <i>Oracle v. Google</i> conflict with this Court’s seminal decision in <i>Baker v. Selden</i>, 101 U.S. 99 (1879), misinterpret Congress’s codification of this Court’s fundamental channeling principle and related limiting doctrines, and upend nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software. Based on the fundamental channeling principle enunciated in <i>Baker v. Selden</i>, as reflected in § 102(b) of the Copyright Act, the <i>functional requirements</i> of APIs for computer systems and devices, like the internal workings of other machines, are outside of the scope of copyright protection even as non-merged aspects of the implementing code for APIs are protectable. Google <i>independently implemented</i> the functional specifications of the 37 APIs at issue and hence did not infringe Oracle’s copyrights.<br><br>By way of brief ... https://www.ssrn.com/abstract=3517514
https://www.ssrn.com/1867164.htmlSat, 15 Feb 2020 11:14:11 GMTREVISION: <i>Google v. Oracle</i> Amicus Merits Stage Brief: Vindicating IP’s Channeling Principle and Restoring Jurisdictional Balance to Software Copyright ProtectionThe Federal Circuit’s decisions in <i>Oracle v. Google</i> conflict with this Court’s seminal decision in <i>Baker v. Selden</i>, 101 U.S. 99 (1879), misinterpret Congress’s codification of this Court’s fundamental channeling principle and related limiting doctrines, and upend nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software. Based on the fundamental channeling principle enunciated in <i>Baker v. Selden</i>, as reflected in § 102(b) of the Copyright Act, the <i>functional requirements</i> of APIs for computer systems and devices, like the internal workings of other machines, are outside of the scope of copyright protection even as non-merged aspects of the implementing code for APIs are protectable. Google <i>independently implemented</i> the functional specifications of the 37 APIs at issue and hence did not infringe Oracle’s copyrights.<br><br>By way of brief ... https://www.ssrn.com/abstract=3517514
https://www.ssrn.com/1863430.htmlTue, 04 Feb 2020 11:32:30 GMTREVISION: Revisiting and Confronting the Federal Judiciary Capacity 'Crisis': Charting a Path for Federal Judiciary ReformThe modern federal judiciary was established well over a century ago by the Judiciary Act of 1891. Over the next 70 years, the structure and core functioning of the judiciary largely remained unchanged apart from gradual increases in judicial slots. By the mid-1960s, jurists, scholars, practitioners, and policymakers had voiced grave concerns about the capacity of the federal system to function effectively in the face of ever increasing caseloads.<br><br>Heeding calls for reform, in 1972 Congress charged a commission chaired by Senator Roman Hruska to study the functioning of the federal courts and recommend reforms. After extensive study, the Hruska Commission concluded that “[n]o part of the federal judicial system has borne the brunt of increased demands [to protect individual rights and basic liberties and resolve difficult issues affecting the financial structure and commercial life of the nation] more than the courts of appeals.” The Commission called attention to the ... https://www.ssrn.com/abstract=3436493
https://www.ssrn.com/1857538.htmlTue, 14 Jan 2020 09:52:04 GMTREVISION: The Uncopyrightability of Edicts of GovernmentThis amicus brief filed in the Supreme Court appeal of Georgia, et al., v. Public.Resource.Org., explores the interplay of copyright law and the edicts of government doctrine. The “edicts of government” doctrine was first validated by the U.S. Supreme Court in a series of nineteenth century cases. Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834); Banks v. Manchester, 128 U.S. 244 (1888); Callaghan v. Meyers, 128 U.S. 617 (1888). While the doctrine has never been directly recognized in the express wording of the copyright statute, it is nevertheless firmly rooted in foundational copyright principles that are themselves reflected in the text of the statute.<br><br>Three foundational copyright principles buttress the doctrine. First, copyrightable authorship does not extend to official announcements of law, the hallmark of edicts of government. Authorship as requires personalization, an attribute that is antithetical to official pronouncements of law, which are generated in an impersonal ... https://www.ssrn.com/abstract=3477564
https://www.ssrn.com/1840396.htmlMon, 11 Nov 2019 09:11:22 GMTNew: File-Sharing Copyrighted Works without Authorization: A Misguided Social MovementA little more than a decade ago, Napster rocked the music industry by enabling anyone with a computer and an Internet connection to costlessly and virtually anonymously distribute files to millions of others. After the recording industry brought enforcement actions, file-sharers, their attorneys, and many legal scholars defended their actions as both morally and legally justifiable. A team of crusading law students led by Professor Charles Nesson sought to build a social movement supporting file-sharing. <br><br>This commentary questions the ethics of file-sharing popular music. The Nesson team’s choice to employ the rhetoric of social-justice movements devalues other, legitimate social movements, misleads the public, and obscures the critical legal issues – the scope of copyright’s distribution right and how statutory damages should be applied in file-sharing cases. The strategy backfired. <br><br>The commentary contends that the social-justice movement analogy should ... https://www.ssrn.com/abstract=3477653
https://www.ssrn.com/1840167.htmlSat, 09 Nov 2019 17:22:35 GMTNew: Athena Rising? Brief of Professors Jeffrey A. Lefstin and Peter S. Menell as
<i>Amici Curiae</i> in Support of Petition for a Writ of Certiorari in
<i>Athena Diagnostics v. Mayo Collaborative Services</i>In <i>Bilski v. Kappos</i> (2010), this Court explained that its interpretation of 35 U.S.C. § 101 has been guided by over 150 years of historical practice. Yet two years later in <i>Mayo Collaborative Services v. Prometheus Laboratories</i> (2012), the Court triggered the most radical redefinition of patent-eligible subject matter in U.S. history by engrafting an <i>inventive application</i> requirement for patenting practical applications of scientific discoveries.<br><br>Mayo based this requirement on three critical assumptions: (1) Congress has never addressed the question of the patentability of scientific discoveries; (2) foundational precedent of the English courts and of this Court excluded scientific discoveries and demanded inventive application as a condition of patent eligibility; and (3) a new extra-textual limitation on patentability was necessary to address the undue preemption of laws of nature and other scientific discoveries. Unfortunately, inadequate briefing in ... https://www.ssrn.com/abstract=3477521
https://www.ssrn.com/1840125.htmlSat, 09 Nov 2019 08:52:44 GMTREVISION: The Uncopyrightability of Edicts of GovernmentThis amicus brief filed in the Supreme Court appeal of Georgia, et al., v. Public.Resource.Org.,explores the interplay of copyright law and the edicts of government doctrine. The “edicts of government” doctrine was first validated by the U.S. Supreme Court in a series of nineteenth century cases. Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834); Banks v. Manchester, 128 U.S. 244 (1888); Callaghan v. Meyers, 128 U.S. 617 (1888). While the doctrine has never been directly recognized in the express wording of the copyright statute, it is nevertheless firmly rooted in foundational copyright principles that are themselves reflected in the text of the statute.<br><br>Three foundational copyright principles buttress the doctrine. First, copyrightable authorship does not extend to official announcements of law, the hallmark of edicts of government. Authorship as requires personalization, an attribute that is antithetical to official pronouncements of law, which are generated in an impersonal ... https://www.ssrn.com/abstract=3477564
https://www.ssrn.com/1837809.htmlThu, 31 Oct 2019 15:46:32 GMTREVISION: Reforming Patent Eligibility: Supplementary Statement of Professors Jeffrey A. Lefstin and Peter S. MenellSeven years ago, the Supreme Court triggered a drastic and far-reaching experiment in patent eligibility standards. During the preceding decades, district courts invalidated a small handful of patents per year on eligibility grounds. Since the Court’s <i>Mayo</i> decision, that number has skyrocketed past 100 patents per year. The <i>Mayo</i>-<i>Alice</i> framework has also wreaked attendant havoc at the Federal Circuit, the Patent Office, and among the broad range of businesses and research institutions assessing investments in research and development. District courts now routinely integrate specific patent validity considerations set forth in sections 102, 103, and 112 into section 101 patent eligibility determinations without the care and precision that the patent validity provisions demand. They also routinely invalidate patents at early stages of litigation without creating a record. The Federal Circuit is struggling to make sense of the fallout of the Supreme Court’s radical ... https://www.ssrn.com/abstract=3399499
https://www.ssrn.com/1830193.htmlThu, 03 Oct 2019 14:30:39 GMTREVISION: Revisiting and Confronting the Federal Judiciary Capacity 'Crisis': Charting a Path for Federal Judiciary ReformThe modern federal judiciary was established well over a century ago by the Judiciary Act of 1891. Over the next 70 years, the structure and core functioning of the judiciary largely remained unchanged apart from gradual increases in judicial slots. By the mid-1960s, jurists, scholars, practitioners, and policymakers had voiced grave concerns about the capacity of the federal system to function effectively in the face of ever increasing caseloads.<br><br>Heeding calls for reform, in 1972 Congress charged a commission chaired by Senator Roman Hruska to study the functioning of the federal courts and recommend reforms. After extensive study, the Hruska Commission concluded that “[n]o part of the federal judicial system has borne the brunt of increased demands [to protect individual rights and basic liberties and resolve difficult issues affecting the financial structure and commercial life of the nation] more than the courts of appeals.” The Commission called attention to the ... https://www.ssrn.com/abstract=3436493
https://www.ssrn.com/1821140.htmlWed, 04 Sep 2019 18:52:07 GMTNew: <i>MGM v. Grokster</i> – Amicus Brief of Professors Peter S. Menell, David Nimmer, Robert P. Merges, and Justin HughesThis case turns on whether the Supreme Court’s 1984 decision in <i>Sony</i> conclusively resolves at the summary judgment stage the present dispute – involving strikingly different technology that was unimaginable at the time that the <i>Sony</i> case was decided. Although some of the language used in the <i>Sony</i> decision – stating that providers of technology that is capable of substantial noninfringing uses cannot be subject to contributory infringement liability – appears to predetermine the outcome of this matter, such a far-reaching, prospective rule goes well beyond the language or intent of the Copyright Act and misconstrues the proper judicial function in copyright adjudication. Over the course of nearly two centuries, courts have evolved, with tacit legislative consent, a rich infringement jurisprudence that balances a range of considerations on a case-by-case basis. This jurisprudence has long recognized indirect as well as direct infringement. In its comprehensive ... https://www.ssrn.com/abstract=3443074
https://www.ssrn.com/1819996.htmlFri, 30 Aug 2019 13:30:33 GMTREVISION: Intellectual Property in the New Technological Age: 2019 - Chapters 1 and 2Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.<br><br>The 2019 Edition reflects the following principal developments:<br><br><b>Trade Secrets:</b> Congress passed the Defend Trade Secrets Act of 2016, one of the most momentous changes in the history of trade secret protection. The new law opens up the federal courts to trade secret cases, provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances,” and establishes immunity for whistleblowers. Other recent developments address nonsolicitation agreements, the inevitable disclosure doctrine, and the enforceability of noncompetition ... https://www.ssrn.com/abstract=3415161
https://www.ssrn.com/1816453.htmlSun, 18 Aug 2019 09:08:37 GMTREVISION: Revisiting and Confronting the Federal Judiciary Capacity 'Crisis': Charting a Path for Federal Judiciary ReformThe modern federal judiciary was established well over a century ago by the Judiciary Act of 1891. Over the next 70 years, the structure and core functioning of the judiciary largely remained unchanged apart from gradual increases in judicial slots. By the mid-1960s, jurists, scholars, practitioners, and policymakers had voiced grave concerns about the capacity of the federal system to function effectively in the face of ever increasing caseloads.<br><br>Heeding calls for reform, in 1972 Congress charged a commission chaired by Senator Roman Hruska to study the functioning of the federal courts and recommend reforms. After extensive study, the Hruska Commission concluded that “[n]o part of the federal judicial system has borne the brunt of increased demands [to protect individual rights and basic liberties and resolve difficult issues affecting the financial structure and commercial life of the nation] more than the courts of appeals.” The Commission called attention to the ... https://www.ssrn.com/abstract=3436493
https://www.ssrn.com/1815783.htmlThu, 15 Aug 2019 21:45:27 GMTNew: Mashups and Fair Use: The Bold Misadventures of the Seussian Starship EnterpriseThis amicus brief filed in the Ninth Circuit appeal of <i>Dr. Seuss Enterprises v. ComicMix</i> seeks to rectify and restore the balances underlying the Copyright Act of 1976 — particularly the interplay of the Section 106(2) right to prepare derivative works and the fair use doctrine. The District Court granted the defendants’ motion for summary judgment on the ground that OH THE PLACES YOU’LL BOLDLY GO! — the defendants’ illustrated book combining Dr. Seuss’s OH THE PLACES YOU’LL GO! and other Dr. Seuss books with <i>Star Trek</i> characters and themes — made fair use of the Dr. Seuss works.<br><br>Based on the works at issue, uncontested facts, and the judge’s factual findings, the brief contends that defendants’ unauthorized derivative work plainly supported a grant of summary judgment <i>for the plaintiff</i> on the fair use defense. The District Court’s conclusory finding that the defendants’ work is “highly transformative,” disregard of the second and third fair use factors, ... https://www.ssrn.com/abstract=3436486
https://www.ssrn.com/1815746.htmlThu, 15 Aug 2019 16:04:25 GMTREVISION: Reforming Patent Eligibility: Supplementary Statement of Professors Jeffrey A. Lefstin and Peter S. MenellSeven years ago, the Supreme Court triggered a drastic and far-reaching experiment in patent eligibility standards. During the preceding decades, district courts invalidated a small handful of patents per year on eligibility grounds. Since the Court’s <i>Mayo</i> decision, that number has skyrocketed past 100 patents per year. The <i>Mayo</i>-<i>Alice</i> framework has also wreaked attendant havoc at the Federal Circuit, the Patent Office, and among the broad range of businesses and research institutions assessing investments in research and development. District courts now routinely integrate specific patent validity considerations set forth in sections 102, 103, and 112 into section 101 patent eligibility determinations without the care and precision that the patent validity provisions demand. They also routinely invalidate patents at early stages of litigation without creating a record. The Federal Circuit is struggling to make sense of the fallout of the Supreme Court’s radical ... https://www.ssrn.com/abstract=3399499
https://www.ssrn.com/1798456.htmlMon, 17 Jun 2019 11:41:57 GMTNew: Economic Analysis of Network Effects and Intellectual PropertyThe information revolution has brought demand-side effects to the fore of economic activity, business strategy, and intellectual property jurisprudence and policy. Intellectual property doctrines play a central role in harnessing network effects, promoting innovation to overcome excess inertia, and balancing consumer welfare, competition, and innovation. This Article surveys and integrates the economic, business strategy, and legal literatures relating to network effects and intellectual property. Part I introduces the topic of network effects and provides an overview of the Article. Part II describes the functioning of network markets. Part III examines the interplay of business strategy, contract, standard setting organizations, intellectual property, and competition policy. Part IV presents three principles for tailoring intellectual property regimes and competition policy to network technologies. Part V traces the evolution of intellectual property protection for network features ... https://www.ssrn.com/abstract=3387709
https://www.ssrn.com/1793919.htmlTue, 04 Jun 2019 13:01:49 GMTREVISION: Patent Showdown at the N.D. C[orr]alSoftware patent cases often present dozens of claims requiring tremendous effort and years of costly litigation to reach a resolution. In a provocative essay, Judge William Alsup offers an innovative case management solution inspired by western frontier justice. As Judge Alsup warned attorneys in a recent case, tell your clients that “the day of reckoning is close at hand.”<br><br>Modeled after the famous “Shootout at the OK Corral,” the “Showdown at the N.D. C[orr]al” aims to streamline patent litigation by requiring the patentee to choose its “best” claim and the defendant to choose the “weakest” claim for an early summary judgment showdown. Judge Alsup emphasizes the potentially severe stakes: “injunction city” if the patentee prevails and “big” sanctions if the claims fail.<br><br>This article assesses whether Judge Alsup’s patent case management invention works for its intended purposes. Based on a review of the two showdowns to date, it concludes that the showdown procedure ... https://www.ssrn.com/abstract=3350176
https://www.ssrn.com/1788615.htmlThu, 16 May 2019 15:31:24 GMTREVISION: Patent Showdown at the N.D. Cal. CorralSoftware patent cases often present dozens of claims requiring tremendous effort and years of costly litigation to reach a resolution. In a provocative essay, Judge William Alsup offers an innovative case management solution inspired by western frontier justice. As Judge Alsup warned attorneys in a recent case, tell your clients that “the day of reckoning is close at hand.”<br><br>Modeled after the famous “Shootout at the OK Corral,” the “Showdown at the N.D. Cal. Corral” aims to streamline patent litigation by requiring the patentee to choose its “best” claim and the defendant to choose the “weakest” claim for an early summary judgment showdown. Judge Alsup emphasizes the potentially severe stakes: “injunction city” if the patentee prevails and “big” sanctions if the claims fail.<br><br>This article assesses whether Judge Alsup’s patent case management invention works for its intended purposes. Based on a review of the two showdowns to date, it concludes that the showdown ... https://www.ssrn.com/abstract=3350176
https://www.ssrn.com/1776351.htmlTue, 02 Apr 2019 17:50:52 GMTNew: <i>Google v. Oracle</i> Amicus Certiorari Stage Brief: Vindicating IP’s Channeling Principle and Restoring Jurisdictional Balance to Software Copyright ProtectionThe Supreme Court should grant review of the Federal Circuit’s decisions in <i>Oracle v. Google</i> for two compelling sets of reasons. First, the Federal Circuit’s decisions conflict with this Court’s seminal decision in <i>Baker v. Selden</i>, 101 U.S. 99 (1879), misinterpret Congress’s codification of this Court’s fundamental channeling principle and related limiting doctrines, and upend nearly three decades of sound, well-settled, and critically important decisions of multiple regional circuits on the scope of copyright protection for computer software. By various measures—economic output and growth, employment, international competitiveness, strategic national defense—the computer software industry is among the most significant in the United States. As the digital revolution continues to unfold, the software industry’s importance will only grow. The balance of intellectual property protection for the software industry drives innovation and competition in this critical ... https://www.ssrn.com/abstract=3341517
https://www.ssrn.com/1771484.htmlSun, 17 Mar 2019 11:29:29 GMTREVISION: Using Fee Shifting to Promote Fair Use and Fair LicensingThe fair use doctrine seeks to facilitate socially optimal uses of copyrighted material. As a practical matter, however, cumulative creators, such as documentary filmmakers and many contemporary musicians, are often reluctant to rely on the fair use doctrine because of its inherent uncertainty, the potentially harsh remedies for copyright infringement, and the practical inability to obtain effective pre-clearance rights. Moreover, copyright owners have no obligation under existing law to respond to a cumulative creator’s inquiry. Thus, a familiar refrain in professional creative communities is “if in doubt, leave it out.”<br><br> In this Article we propose a novel mechanism that would afford a limited, cost-effective process for pre-clearing works, promote fair negotiation over cumulative uses of copyrighted works, and reduce the exposure of cumulative creators from the inherent risks of relying on copyright’s de minimis and/or fair use doctrine. Under this mechanism, a cumulative ... https://www.ssrn.com/abstract=2159325
https://www.ssrn.com/1768865.htmlWed, 06 Mar 2019 22:23:46 GMT